Appeal No. 1999-1236
Application 07/571,782
can be assigned to the phrase “hepatic decompensation.” As a result, the scope of the
claims cannot be reasonably ascertained. As set forth in In re Morris,
127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), “[i]t is the applicants'
burden to precisely define the invention, not the PTO’s. See 35 U.S.C. § 112, ¶2.”
TIME PERIOD FOR RESPONSE
This opinion contains a new ground of rejection pursuant to 37 CFR § 1.196(b)
(amended effective Dec. 1, 1997, by Final Rule Notice, 62 Fed. Reg. 53, 131, 53, 197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection shall not be considered final
for purposes of judicial review.”
37 CFR § 1.196(b) also provides that appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims.
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have the matter
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